Friday, March 22, 2013

Android likely infringes Nokia patent on tethering as Google and HTC lose out on claim construction

Android's popular tethering feature, which enables mobile phones to act as network routers in order to share their Internet connections with portable computers, appears likely to infringe on a key Nokia patent. At the United States International Trade Commission (USITC, or just ITC) Nokia has just defeated Google and HTC with respect to the proper legal interpretation of U.S. Patent No 5,884,190 on a "method for making a data transmission connection from a computer to a mobile communication network for transmission of analog and/or digital signals". As a result, it appears very difficult for Google and HTC to deny infringement at the trial (which will start in two months' time), and if they cannot prove this patent invalid based on prior art (which would have to be older than June 1995), a U.S. import ban against HTC's Android devices is reasonably likely (unless, which is even more likely, HTC agrees to send royalty checks to Finland).

This is only one of 40 patents Nokia has asserted against HTC (by the way, I'm writing this on my way back from a German Nokia v. HTC trial, on which I'll report later), but the '190 patent may very well turn out to give Nokia enormous leverage in its intellectual property enforcement against its competitors. This is about an Android feature that not only HTC but dozens of other device makers, most notably Samsung, also provide to their customers. I've been using it for some time with different Galaxy smartphones and phablets. It was initially considered an Android innovation, but it may now turn out that Nokia filed a patent on the underlying concept well over a decade (!) before Google presented the feature. Here's a picture from the patent document that shows only one example of the kinds of connections the patent covers -- this picture is worth a thousand words:

At this stage, prior to some further narrowing that I'm sure will occur between now and the ITC trial, Nokia is asserting seven patents in this ITC investigation. Judge Thomas Pender issued a claim construction order on Thursday, which entered the public record today. Claim construction is an important milestone in patent litigation. It's where a judge determines how the patent claims must be understood and defines the scope of protection conferred by a patent.

Judge Pender's claim construction order addresses only those claim terms on the meaning of which the parties couldn't agree (the judge is fine with the parties' agreed-upon proposals). Besides undisputed terms the order also doesn't address certain means-plus-function terms because some more evidence is needed with respect to whether or not those terms are indefinite. Yesterday's order construes (i.e., interprets) term from five of the seven patents-in-suit. I believe Nokia will now consider withdrawing three of them, but it prevailed on two -- a multi-baseband interface patent (which also appears very powerful) and the tethering patent. Patent litigation is a "you win some, you lose some" game, and a high drop-out rate is usual in smartphone patent lawsuits, especially in ITC investigations. What matters at the end of the day is whether a complainant can prevail on one or two really impactful patents in order to obtain a settlement on favorable terms. If the tethering patent was the only one on which Nokia ultimately prevails, it would probably more than worth the effort (including the costs related to less successful patent assertions).

Most of the time defendants seek to narrow the scope of a patent through their proposed claim constructions so they can deny infringement. That's because most patent claims appear pretty broad at first sight but have a narrower meaning at closer scrutiny of the entire patent document, representations made during examination, and extrinsic evidence (such as dictionary definitions). In a minority of cases defendants argue that a patent is broad in order to pave the way for invalidation. In this case, Google tried -- but failed -- to narrow the scope of the patent.

Google is involved as a third-party intervenor supporting HTC. It even wanted to join as a co-defendant, but was only allowed to intervene, as it's also doing in some German cases. Google is really scared of Nokia's patent portfolio and its potential impact on Android.

Now, back to the most impressive patent in this investigation, the one on tethering. Honestly, I had not looked at that one in detail prior to downloading the claim construction order and reading it closely (all of this on a train). Its title, "method for making a data transmission connection from a computer to a mobile communication network for transmission of analog and/or digital signals", is pretty interesting, especially considering that the invention was made in 1995. But neither the title nor the abstract of a patent define its scope, and not even a drawing (I just showed the one further above because it acually does show part of the scope of the patent), but the claims. That's why claim construction is so key. This is its broadest method claim, claim 1:

"Method for making a data transmission connection from a computer to any one of a plurality of mobile communication networks for transmission of analog and/or digital signals, wherein the computer is connected with one of the mobile communication networks via a telecommunication terminal which is in local data transmission connection with the computer; and wherein the data transmission connection utilises at least a first operation mode for connection with a first of said telecommunication networks and a second operation mode for connection with a second of said telecommunication networks, the method comprising steps of:

testing said communication networks to determine which of said plurality of mobile communication networks are available for a connection to be made via the telecommunication terminal;

selecting one of the available mobile communication networks;

at the telecommunication terminal, setting an operation mode corresponding to the selected one of the mobile communication networks; and

If Google and HTC (and other Android device makers in the future) want to deny infringement, they have to claim that there's at least one claim limitation (element) that Android doesn't practice. For example, they might argue that Android doesn't "select" an available communication network. Until I see a really convincing non-infringement argument, I believe the above claim covers Android's tethering feature.

Google (with HTC's blessings) tried to narrow the meaning of two passages of the claim language:

Google wanted "a plurality of mobile communication networks" ("plurality" in a patent generally means "two or more") to somehow imply that there have to be "two or more combinations of telecommunications equipment, where one combination is an analog system and one combination is a digital system". The judge rejected this because "the device tests which network is available and transmits on that mode, whether the mode is analog or digital". If Google had suceeded, it would then probably have argued that tethering via a digital network like UMTS or 4G, and possibly even over second-generation GPRS, doesn't fall within the scope of the patent because then you have a digital Internet connection and a digital cellular connection, but no analog connection (except perhaps at the transport level, i.e., the radio waves).

Google furthermore argued that "setting the data transmission connection for transmission via the selected operation mode" actually means "setting a connection from the computer to the telecommunication terminal to operate in the same operation mode as the selected telecommunication network". The judge "expressly reject[ed] HTC's and Google's proposed construction" and even made the remark in a footnote that there was a "prior inconsistent admission" by Google and HTC to the contrary. In this context Judge Pender also wrote the following:

"As Nokia argues, the connection of the computer itself refers to the communicatin between the computer and the communication network, not the communication between the computer and the telecommunication terminal, which I note the patent history references separately -- two sentences earlier."

I'm sure Google and HTC will deny infringement, even after Nokia defeated their claim construction proposals, at the trial and thereafter. If the judge's initial determination (preliminary ruling subject to review) favors Nokia, which is now more likely than not, they will ask the Commission (the top-level decision-makers of the ITC) to overrule the judge. But if they lose again, an import ban will be ordered, absent a license agreement.

In the weeks and months ahead they are also going to fight hard against certain means-plus-function claims of this patent, such as its broadest apparatus claim, claim 14. It's generally difficult to prevail on method claims in ITC investigations, but since Android device makers induce tethering by proactively promoting it and telling their customers how to use it, the apparatus claims may not be needed.

As I wrote above, another way for Google and HTC to solve the problem would be to prove the patent invalid -- maybe not in its entirety, but at least in its broadest form, hoping that a narrower surviving version of the patent will no longer be infringed or can somehow be worked around without dropping the feature altogether. I frankly don't know how good the prior art that Google and HTC have identified is at this stage. But it won't be easy to challenge the validity of this patent. This patent has a mid-1995 priority date. Good luck with finding tethering-related prior art from the first half of the 1990s, or earlier than that. In 1995 the World Wide Web was basically in its infancy. Google was founded three years later. "Portable" phones weighed more than many of today's notebooks.

It appears that Nokia didn't even realize at the time how valuable a patent this might be. It applied for this patent only in Finland and the United States. Apparently it didn't even want to spend money on a European patent application, and/or some Asian patent applications, with multiple translations.

Apple and BlackBerry don't have to worry about this patent because they settled their patent disputes with Nokia. But I don't know if even one Android device maker is licensed.

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About Me

Florian Mueller is an app developer who used to be an award-winning intellectual property activist. His 30 years of software industry expertise span different market segments (games, education, productivity and infrastructure software), diverse business models, and technical and commercial areas of responsibility. In recent years, Florian advised a diversity of clients on the patent wars surrounding mobile devices, and on their economic and technical implications. (In order to avoid conflicts of interest, Florian does not hold or initiate transactions in any technology stocks or derivatives thereof, except that he is long AAPL.) He is now developing games for smartphones and tablet computers.